Trademark procedures and strategies: Serbia
The following national laws govern trademarks in Serbia: the Law on Trademarks (Official Gazette RS 104/2009, 16/12/2009 and 10/2013); the Customs Law (Official Gazette RS 18/2010, Part VIII – “Measures for the protection of intellectual property rights at the border”); the Law on Special Authorities for the Efficient Protection of IP rights (Official Gazette RS 46/06 and 104/09); and The Law on Trade (Official Gazette RS 53/2010 and 10/2013).
The following national laws govern trademarks in Serbia:
- the Law on Trademarks (Official Gazette RS 104/2009, 16/12/2009 and 10/2013);
- the Customs Law (Official Gazette RS 18/2010, Part VIII – “Measures for the protection of intellectual property rights at the border”);
- the Law on Special Authorities for the Efficient Protection of IP rights (Official Gazette RS 46/06 and 104/09); and
- The Law on Trade (Official Gazette RS 53/2010 and 10/2013).
Serbia is a signatory to the following international agreements relating to trademarks:
- the Paris Convention for the Protection of Industrial Property (1883);
- the Madrid Agreement on the International Registration of Trademarks (1891);
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
- the International Classification of Goods and Services (Nice Agreement, 1957);
- the International Classification of the Figurative Elements of Marks (Vienna Agreement, 1973);
- the Nairobi Treaty on the Protection of the Olympic Symbol (1981);
- the Trademark Law Treaty (1994); and
- the Singapore Treaty on the Law of Trademarks (2006).
A trademark right is a legislative right that is acquired by registration. Unregistered marks are not regulated by the Law on Trademarks, except for well-known trademarks. However, well-known status must be established. To establish unregistered rights, it is necessary to prove genuine use of the mark which has rendered it capable of distinguishing the relevant goods or services in the course of trade. It is possible to enforce unregistered marks based on the unfair competition rules of the Law on Trade.
All natural or legal persons involved in trade can apply for and own a mark. It is not necessary to prove such activity. Associations and non-governmental and charity organisations and funds may own trademarks.
Foreign undertakings not based in Serbia must be represented by a local attorney or registered IP agent. Power of attorney can be filed belatedly and need not be notarised or legalised.
Any sign that is capable of being represented graphically may be protected as a trademark, provided that it is capable of distinguishing the relevant goods or services in the course of trade. A sign may comprise (among other things) words, slogans, letters, numbers, images, drawings, combinations of colours, three-dimensional shapes, combinations of such signs and graphically represented musical notes.
According to Article 5 of the Law on Trademarks, a sign cannot be protected as a trademark if it:
- is contrary to public policy or morality;
- is descriptive;
- is not distinctive;
- is generic;
- is deceptive to the public as to the nature, quality or geographical origin of the goods or services;
- is identical to an earlier trademark registered for identical goods or services;
- is identical or similar to an earlier trademark registered for identical or similar goods or services, if this may cause confusion among the public or a likelihood of association with the earlier trademark;
- is identical or similar to a third party’s sign which is well known in Serbia within the meaning of Article 6bis of the Paris Convention;
- is a reproduction, imitation, translation or transliteration of a third party’s famous trademark, regardless of the goods or services;
- infringes copyright or other IP rights by its appearance or content;
- contains official signs or hallmarks of quality control or warranty, or imitations thereof; or
- comprises a state or other public coat of arms, flag or other emblem, or the name or abbreviation of the name of a country or international organisation.
The likeness or name of a person can be protected as a trademark only with that person’s consent. The likeness or name of a deceased person can be protected as a trademark only with the consent of his or her parents, spouse or children. The likeness or name of a historical person or other deceased famous person can be protected as a trademark only with the authorisation of the competent authority and the consent of such person’s relatives up to the third degree of kinship.
Seals, stamps and hallmarks are not deemed as trademarks.
Legal protection of trademarks used in the trade of goods or services is acquired through administrative proceedings at the Serbian IP Office. The procedure is commenced by filing a trademark application, which is subject to both formal and substantive examination.
Opposition is not provided for under the Law on Trademarks, as the application is examined by the IP Office on absolute and relative grounds. The Law on Trademarks does not explicitly distinguish between absolute and relative grounds for refusal. Any party may file a written opinion citing reasons for which the trademark application does not meet the grounds for registration (eg, similarity to a prior registered trademark). Any party that files such a written opinion is not considered to be a party to the examination proceedings.
If an application is not eligible for trademark registration, the applicant is invited to respond within a specified timeframe. If it fails to meet the examiner’s request or if the examiner still deems the trademark unregistrable, the application will be refused either fully or for certain goods or services.
If the application meets the requirements for trademark registration, the fee for the first 10 years of registration and the costs of publication of the trademark must first be paid. On payment, the IP Office will issue a trademark registration certificate and enter the trademark in the Trademark Register. The trademark is then published in the Official Gazette.
Trademark protection is granted for 10 years from the filing date and may be renewed indefinitely. A trademark is renewed by filing a request on a prescribed form and paying the prescribed fee. It may be renewed within a six-month grace period with a 50% penalty fee.
Removal from register
Revocation: A trademark can be removed from the register based on the following grounds:
- The trademark has not been in genuine used on the Serbian market for five years, without justified reason.
- The trademark has become a generic term for the goods or services for which it was registered, due to acts or omissions of the rights holder or its successor.
- The trademark has become misleading as to the geographical origin, type, quality or other characteristics of the goods or services as a result of the manner of its use by the rights holder or its successor.
- The trademark has become contrary to public policy or morality.
- A collective or certification mark has been used contrary to a general act.
These procedures are commenced by filing a written request, accompanied by prescribed particulars, annexes and their contents. A regular request is sent to the rights holder, which is entitled to respond within a certain timeframe. A hearing with the IP Office may be scheduled. After completion of the procedure, the IP Office will issue a decision either revoking the trademark (either fully or for certain goods or services) or rejecting the revocation request.
Termination: A trademark will be terminated on expiry of the 10-year period for which the initial fee has been paid. A trademark may also be terminated:
- if the rights holder relinquishes its trademark rights, on the date following receipt of a statement of relinquishment;
- as a result of a court decision, on the date specified in the judgment; or
- if the rights holder ceases to exist (legal person) or dies (natural person), on the date of cessation or death, except where the trademark has been transferred to successors.
Invalidation: A trademark may be declared invalid if the requirements prescribed by the Trademark Law are not met at the time of issuance of the decision. It may be declared invalid, either fully or for certain goods or services, at any time during the term of protection on the request of an interested party or the state prosecutor. The procedure for invalidation of a trademark is commenced by filing a written request with appropriate evidence and prescribed data. The rights holder may respond within a certain timeframe. A hearing may be scheduled. After completion of the procedure, the IP Office will issue a decision either invalidating the trademark (either fully or for certain goods or services) or rejecting the request.
The trademark application procedure takes six to 18 months, depending on whether objections have been raised. The procedure for recordal of changes in the Trademark Register takes around one month, as does the renewal procedure.
Official trademark searches are available. Results of the searches usually come through within two weeks.
Trademark rights may be enforced through:
- trademark infringement action;
- unfair competition action;
- customs action (not available for unregistered rights);
- Market Trade Inspectorate action (not available for unregistered rights);
- criminal proceedings; or
- copyright infringement action.
Proceedings before the first-instance courts can take from several months to two years, depending on the complexity of the case. Proceedings resulting from customs or market inspection seizures have immediate effect, but must be justified through a ruling in favour of the rights holder in certain cases where the importer or distributor objects to the seizure.
Trademark infringement proceedings are conducted before the Commercial Court or a higher court of general competence (when natural persons are involved) in Belgrade. There are no specialised IP courts; however, at first instance IP infringement matters are dealt with by the district courts. The proceedings are conducted under the rules of general civil procedure. The proceedings are considered urgent; the trial starts a few months after the action is filed.
An infringement action may be commenced within three years of the rights holder becoming aware of the infringement and the identity of the infringer, but no later than five years from the date of first infringement.
The following can be sought:
- determination and cessation of the infringement;
- seizure, exclusion from commercial channels, destruction or alteration of the infringing goods or tools and equipment used to manufacture them;
- compensation for damages (triple damages in case of gross negligence) and legal costs and expenses;
- publication of the court decision; and
- disclosure of information about third parties participating in the infringement.
First-instance decisions can be appealed. An extraordinary legal remedy revision is allowed for second-instance decisions relating to infringement matters.
Upon justified request, the court may order the securing of evidence, the seizure or removal from circulation of infringing products or an injunction forbidding the continuation of infringing activities. Where the marks are identical, the court is obliged to issue an injunction.
Contesting trademark registration
If a trademark application was filed against the principle of good faith, or if a trademark was registered on the basis of such application or in violation of legal or contractual obligations, anyone whose legal interest has been violated as a result may contest the registration in court. Such an action cannot be filed more than five years after the trademark was entered in the Trademark Register.
Related administrative proceedings
Administrative proceedings can be related to court infringement proceedings where invalidation or revocation of the mark is considered an interlocutory question in litigation.
Unfair competition action
Unfair competition actions are regulated by the Law on Trade, which prescribes penalties for activities deemed to constitute acts of unfair competition.
Customs seizures may be initiated through the prescribed procedure ex officio or at the rights holder’s request. Customs supervision of trademarks is regulated by the Customs Law and regulations on border measures for the protection of IP rights. Such customs protection lasts for one year and may be renewed.
The rights holder may request the direct destruction of seized counterfeit goods within 10 working days, provided that the importer does not object to the seizure. After 20 working days, the infringement and destruction of the counterfeit goods must be dealt with in court proceedings; failing this, the customs authorities must release the goods for import.
Market inspection seizure
As with the customs action for seizure of imported counterfeit goods, it is possible to temporarily seize counterfeit goods found in trade. Within 15 days, the rights holder may:
- request destruction of the seized goods if the infringer does not object to the seizure; or
- initiate court proceedings to protect its rights.
Violation of rights in company names or other distinctive marks is a criminal act against commerce and will be pursued by the public prosecutor.
The Law on Trademarks sets out fines for corporate trademark infringement offences committed by companies or other legal persons, as well as responsible natural persons within such companies or legal persons. The relevant proceedings are commenced by filing a criminal offence report, although the proceedings are pursued by the public prosecutor. During the procedure, the rights holder may request compensation for damages, but the criminal court usually decides that damages should be claimed and determined in separate litigation.
Copyright infringement action
Copyright infringement is dealt with in proceedings before the courts of general competence. Under certain conditions, copyright infringement can be considered a criminal act. Copyright can serve as a legal basis for customs seizures and market inspection seizures.
Ownership changes and rights transfers
An assignment agreement should be recorded in the Trademark Register in order to have effect against third parties. The request must be followed by proof of legal title, with any translation certified by a sworn court translator. The original assignment agreement or a certified copy must also be submitted; for certified copies, apostille or legalisation is required.
Short-form agreements are acceptable. Trademarks may be assigned with or without goodwill or compensation; the agreement must explicitly state the compensation amount or that it is without compensation. It may also cover all or only some of the relevant goods or services. However, if the assigned goods or services are essentially similar to those for which the trademark remains registered in the name of the assignor, or if the assignment may create confusion in trade, the assignment may not be approved unless the assignee disclaims protection for the goods or services for which there is a likelihood of confusion.
A licence may be exclusive or non-exclusive and cover all or only some of the relevant goods or services. It may also be limited to a certain territory or timeframe.
The application for recordal must be filed using a prescribed form together with enclosed proof of legal title, with any translation certified by a sworn court translator (it may be partial). Short-form agreements are acceptable. The original licence agreement or a certified copy must be submitted; for certified copies, apostille or legalisation is required.
Use of the mark by the licensee is considered as use that defends against revocation for non-use. In general, trademark licensees may sue for trademark infringement, unless the licence provides otherwise.
Collective and certification trademarks cannot be licensed.
Trademarks and rights relating to a trademark application may be the subject of a pledge on the basis of a pledge agreement, court decision or decision of the competent administrative body in respect of some or all of the relevant goods or services. The pledge may be recorded in the appropriate register of the competent authority on the request of the rights holder, applicant or pledger.
Company names are regulated not by the Law on Trademarks, but rather by the Companies Act. Protection against third-party use of a company name may be grounded on the unfair competition rules contained in the Law on Trade. Violation of rights in a company name constitutes a criminal act under certain conditions.
Copyright and trademarks are often related. Certain signs may be subject to simultaneous copyright and trademark protection, in which case these rights have mutual effect. Under certain conditions, copyright can be used as supporting legal grounds in trademark infringement proceedings.
The Law on Trademarks does not regulate online use of registered and unregistered trademarks. The national domains for Serbia are ‘.rs’ and ‘.срб’. They are registered with the authorised registrar of national domains.
Disputes relating to domain names are resolved before the Serbian Chamber of Commerce and its dispute resolution committee. By initiating proceedings before the committee, the plaintiff accepts the committee’s authority. However, by accepting the committee’s authority, the parties do not waive their right to resolve the dispute before the courts. The committee’s decision can be contested before the courts in Belgrade (the Commercial Court for legal entities; otherwise the Higher Court).
Popovic, Popovic & Partners
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